DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claim 21 is objected to because of the following informalities:
Regarding claim 21, in line 2, Applicant recites “a light fixture to position within a vehicle (i) dispose within a central portion of a vehicle”. This recitation is grammatically incorrect. For examination purposes and consistent with the claim language in the issued parent application, Examiner treats the recitation as “a light fixture to dispose within a central portion of a vehicle”. Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 36 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 14 of prior U.S. Patent No. 12,434,623. This is a statutory double patenting rejection.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21 and 29-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,434,623 (hereinafter US ‘623). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 21 and 29-35 of the present application are respectively anticipated by claims 1-7 of US ‘623.
Regarding claim 21, claim 1 of US ‘623 discloses “An apparatus comprising: a light fixture to dispose within a central portion of a vehicle, the central portion of the vehicle (i) positioned between a first light source of the vehicle and a second light source of the vehicle and (ii) at least partially separate from a lateral portion of the vehicle that includes the first light source and the second light source, the light fixture including a first segment, disposed within the central portion, having a third light source and a second segment, disposed within the central portion, having a fourth light source; the first segment configured to produce light with a first pattern via the third light source; the second segment configured to produce light with a second pattern via the fourth light source; the first pattern and the second pattern configured to indicate a vehicle status of the vehicle that includes a state of charge of one or more batteries of the vehicle and a charging status of the one or more batteries; the light having the first pattern which (1) originates, at a first point in time, at a first portion of the first segment and (ii) terminates, at a second point in time, at a second portion of the first segment to indicate the charging status of the one or more batteries; and the light having the second pattern to illuminate, from the first point in time to the second point in time, across the second segment to indicate the state of charge of the one or more batteries.” Claim 21 of the present application is identical to claim 1 of US ‘623 except for reciting in lines 17-19 that “the light having the second pattern to illuminate, from the first point in time to the second point in time, across at least a portion of the second segment to indicate the state of charge of the one or more batteries”. This recitation is broader in scope than the recitation in claim 1 of US ‘623, thus claim 21 of the present application is anticipated by claim 1 of US ‘623.
Regarding claims 29-35, claims 2-7 of US ‘623 recite identical limitations, respectively. Thus, claims 29-35 of the present application are anticipated by claims 2-7 of US ‘623, respectively.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 22-28 and 37-38 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The limitations set forth in dependent claims 22-28 are already contained in independent claim 21, and the limitations set forth in claims 37-38 are already contained in independent claim 36. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Regarding independent claims 21 and 36, when analyzed for patentability against the best prior art of record, the claims patentably distinguish.
Regarding claim 21, the best prior arts of record, Choi and Glickman (cited on IDS filed 12/8/25), disclose the claimed limitations but fail to teach that the first pattern and the second pattern configured to indicate a vehicle status of the vehicle that includes a state of charge of one or more batteries of the vehicle and a charging status of the one or more batteries; the light having the first pattern which (1) originates, at a first point in time, at a first portion of the first segment and (ii) terminates, at a second point in time, at a second portion of the first segment to indicate the charging status of the one or more batteries; and the light having the second pattern to illuminate, from the first point in time to the second point in time, across the second segment to indicate the state of charge of the one or more batteries. Accordingly, the claim is deemed patentable over the prior art of record. Claims 29-35 are allowable in that they are dependent on, and further limit claim 21.
Regarding claim 36, the best prior arts of record, Choi and Glickman, disclose the claimed limitations but fail to teach that the first segment having the light with the first pattern in combination with the second segment having the light with the second pattern configured to indicate (i) state of charge of one or more batteries of the vehicle and (ii) a charging status of the one or more batteries by having an illumination of light appear to originate at the first segment and terminate at the second segment. Claims 39-40 are allowable in that they are dependent on, and further limit claim 36. Accordingly, the claim is deemed patentable over the prior art of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN P GRAMLING whose telephone number is (571)272-9082. The examiner can normally be reached Monday-Friday 8:30am-5pm EST.
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/SEAN P GRAMLING/ Primary Examiner, Art Unit 2875